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HOMER C. UNDERWOOD 

WASHINGTON. D. C. 










How to Seled 
Trade-Marks 



) 5 


Homer C. ynderwood 

Washington, D. C. 






Copyright, 1913, by Homer C, Underwood. 




© 0^847205 




How to Seledl 
Trade Marks 


EDITED BY 

HOMER C UNDERWOOD 


OF THE BAR OF 

WASHINGTON. D. C. 


PRICE $2.50 









PREFACE 


Trade-mark owners have neglected to 
exercise the same care in regard to 
their trade-mark property, that they 
do respecting other property, and this 
is true even in many cases where their 
trade-mark property is of greater value 
than any other property which they 
have. 

One who buys real estate demands 
an abstract of title thereof, and a 
warranty deed, and not satisfied with 
this, submits both the deed and 
abstract to a capable attorney for 
an opinion as to whether there is any 
defect in the title of the grantor. Per¬ 
haps this same person would adopt a 
trade-mark for use in his business 
without making any inquiry as to 
whether the trade-mark is already in 
use and is the property of some com¬ 
petitor, and without making any in¬ 
quiry from any one skilled in the 
trade-mark law, to ascertain whether 


for any reason, the thing which he has 
attempted to use as a trade-mark is a 
proper trade-mark from a legal stand¬ 
point, or whether, if he spends his 
money upon this trade-mark he will be 
entitled to the exclusive use of it as 
against any competitor. 

In order to assist merchants and 
manufacturers to understand more 
fully the laws of the United States, 
pertaining to trade-marks, I have set 
forth under several sub-heads, the im¬ 
portant matters which most frequently 
confuse trade-mark owners; and often 
a failure to understand the principles 
of law treated under these sub-heads, 
and the failure of the party to take 
advice from a competent adviser, re¬ 
sults in great loss. 


HOW TO SELECT 
TRADE-MARKS 



DESCRIPTIVE TRADE-MARKS 

The manufacturer or merchant in¬ 
tends to build a business and good¬ 
will on the name of the goods he makes 
or sells, and the selection of that name 
is a very important matter. People 
who buy goods are inclined to give 
them a name and it is easy for the 
customer to ask for what he wants if 
he can give it a name. Oysters is a 
general name for a food product, but 
a dealer in oysters who was very en¬ 
terprising and desired people to know 
his oysters from others, called them 
“SEAL SHIPPED.” They were 
shipped sealed. Other people had a 
right to ship oysters sealed and say 
they were seal shipped oysters. A 
customer asks for seal shipped oysters 
and he gets them of the dealer, but 







10 HOW TO SELECT TRADE-MARKS 


they are not the oysters packed by the 
one who uses the word, ‘ ‘ SEAL 
SHIPPED” as a trade-mark for oys¬ 
ters. The mistake in selecting this 
trade-mark no doubt cost the company 
thousands of dollars. 

People have a right to make gum and 
flavor it with spearmint. Wrigley did 
so. He then named the gum what it 
is, “Spearmint.” One who goes into a 
drug store where chewing gum is sold, 
and examines the packages can see for 
himself how many ‘‘Spearmint” pack¬ 
ages there are, and how closely they 
resemble the original “WRIGLEY 
SPEARMINT” and will see how easy 
it is to imitate a descriptive mark. It 
is one which compels the owner to re¬ 
sort to expensive litigation to protect 
himself against fraud, under the law 
of unfair competition. I give here a 
number of illustrations of trade-marks 
which have been held descriptive, but 
where the owner has obtained some 
relief from fraudulent practice of 
others. A judgment against fraud in 
such cases is very useful and yet the 



HOW TO SELECT TRADE-MARKS 11 


path of the owner of such a trade¬ 
mark is always strewn with thorns 
and it is unwise to use as trade-marks, 
descriptive words. The following are 
a few of the thousands of descriptive 
trade-marks: 

PEPSIN PUNCH-For non-alcoholic 
beverage. 

FELTLESS—For sweat pads. 

PAIN-EASE—For medicine. 

FULLCUT—For clothing. 

CLUB-HOUSE—For gin. 

STRAIGHT-CUT—For cigarettes. 

ELASTIC—For suspenders. 

IRON BITTERS—For medicine. 

HEALTH-FOOD—For food product. 

ALUMINUM—For wash boards. 

FAVORITE—For letter file. 

COMPUTING-For scales. 

STERLING—For ale. 

SPEARMINT—For chewing gum. 

STANDARD—For any goods. 

MISSPELLED DESCRIPTIVE 
WORDS 

A great many business men seem to 
believe that to misspell a descriptive 
word takes out its descriptive character, 



12 HOW TO SELECT TRADE-MARKS 


and such words as ^ ‘ KLEANWELL/^ 
“BESTOPALL/^ “NEVERS-TICK/^ 
“PINEETING, PITS-U,’^ are a few of 
the illustrations of such words which 
have been held to be descriptive of the 
goods and not valid trade-marks. 

GEOGRAPHICAL NAMES 

In adopting a new trade-mark, it 
should be ascertained whether it is 
the name of any Country, State, City, 
Town, County, River, Bay, or other 
geographical name and if it has no 
important meaning other than being a 
geographical name, it should be dis¬ 
carded and another name selected. 
Geographical names may sometimes be 
protected under the law of unfair com¬ 
petition. The Elgin National Watch 
Company has expended large sums and 
fought many law suits in trying to 
protect the word “ELGIN,” as a trade¬ 
mark for watches. A few of the nu¬ 
merous geographical trade-marks are 
the following: “MOBILE; YALE; 
OZARK; MANHATTAN; CONTINEN¬ 
TAL; ORIENTAL; UNION; AKRON, 



HOW TO SELECT TRADE-MARKS 13 


for cement; LACKLA.WANNA, for coal; 
MOLINE, for plows; COLUMBIA, for 
flour; ELGIN, for watches; OLD 
COUNTRY, CADILLAC and TA- 
BASCO.” Some geographical names 
have other very important meanings 
than being the name of a town, city 
or place, such as “DEFIANCE,” and 
are proper trade-marks, but it is un¬ 
wise to adopt a new trade-mark of 
that nature because there is always 
the possibility of some one in that 
town or city engaging in the same 
business in which the owner of the 
trade-mark is engaged, and there is 
no way to prevent the use of the name 
of the town provided it is honestly 
used by a citizen thereof. 

FOREIGN WORDS 

Foreign geographical terms are sub¬ 
ject to the same objection that is made 
to geographical terms referring to 
places or things in America. Words 
that are descriptive of the goods in 
a foreign language are rejected for 
the same reason given in cases of Eng- 



14 HOW TO SELECT TRADE-MARKS 


lish descriptive words. In a recent case 
prosecuted by the author before the 
Commissioner of Patents, even “ES¬ 
PERANTO’’ was recognized as a lan¬ 
guage to such an extent that the word 
“SANIGA,” which is the Esperanto 
word for sanitary, for mattresses was 
rejected because of its descriptive char¬ 
acter. A few illustrations of descrip¬ 
tive words in a foreign language are 
the following; “LE-BON,” meaning 
“The Good;” “BRASSIERE,” a 
French word for brace as applied to 
an article of women’s wear; “CON- 
SERVA DI TOMATE,” being Italian 
for preserved tomatoes. 

In adopting a new trade-mark avoid 
words of a foreign language that are 
descriptive of the goods or any char¬ 
acteristic of the goods; also avoid for¬ 
eign geographical terms. 

DECEPTIVE TRADE-MARKS 

A trade-mark which is deceptive or 
contains a deceptive suggestion, cannot 
be exclusively appropriated. The word, 
“HALF SPANISH,” applied to cigars 



HOW TO SELECT TRADE-MARKS 15 


where the tobacco contained therein 
is not half Spanish, is held to be de¬ 
ceptive if the tobacco is not half Span¬ 
ish and if it is half Spanish it is de¬ 
scriptive. “SYRUP OF FIGS,” a 
preparation which contains very little, 
if any, syrup of figs, is held to be 
deceptive. 

COLORS AS TRADE-MARKS 

Mere colors are not proper trade¬ 
marks, but a color placed at some 
particular spot on the goods, not nec¬ 
essary in any sense for ornament, or 
preservation of the material, being 
wholly arbitrary, may be upheld. 

REGISTRATIONS PROHIBITED 

AMENDMENTS OF THE UNITED STATES 
TRADE-MARK LAW 

Under the federal trade-mark act and 
its amendments, the following are pro¬ 
hibited : 

1. Immoral or scandalous matter. 

2. Consists of or comprises the flag 
or coat of arms or other insignia of the 
United States or any simulation thereof. 



16 HOW TO SELECT TRADE-MARKS 


or of any state or municipality or of any 
foreign nation, or of any design or pic¬ 
ture that has been or may hereafter be 
adopted by any fraternal society as its 
emblem, or of any name, distinguishing 
mark, character, emblem, colors, flag, or 
banner adopted by any institution, or¬ 
ganization, club, or society which was in¬ 
corporated in any state in the United 
States prior to the date of the adoption 
and use by the applicant. Provided, 
That said name, distinguishing mark, 
character, emblem, colors, flag, or banner 
was adopted and publicly used by said 
institution, organization, club, or society 
prior to the date of adoption and use by 
the applicant: Provided, that trade¬ 
marks which are identical with a reg¬ 
istered or known trade-mark owned and 
in use by another and appropriated to 
merchandise of the same descriptive 
properties, or which so nearly resemble 
a registered or known trade-mark owned 
and in use by another and appropriated 
to merchandise of the same descriptive 
properties as to be likely to cause con¬ 
fusion or mistake in the mind of the 



HOW TO SELECT TRADE-MARKS 17 


public or to deceive purchasers shall 
not be registered: Provided, that no 
mark which consists merely in the name 
of an individual, firm, corporation, or 
association not written, printed, im¬ 
pressed, or woven in some particular or 
distinctive manner, or in association 
with a portrait of the individual, or 
merely in words or devices which are 
descriptive of the goods with which they 
are used, or of the character or quality 
of such goods, or merely a geographical 
name or term, shall be registered under 
the terms of this act: Provided further, 
That no portrait of a living individual 
may be registered as a trade-mark ex¬ 
cept by the consent of such individual, 
evidenced by an instrument in writing; 
And provided further. That nothing 
herein shall prevent the registration of 
any mark used by the applicant or his 
predecessors, or by those from whom 
title to the mark is derived, in commerce 
with foreign nations or among the sev¬ 
eral states or with Indian tribes, which 
was in actual and exclusive use as a 
trade-mark of the applicant, or his pred- 



18 HOW TO SELECT TRADE-MARKS 


ecessors from whom he derived title, for 
ten years next preceding February 20th, 
1905: Provided further, That nothing 
herein shall prevent the registration of 
a trade-mark otherwise registrable be¬ 
cause of its being the name of the appli¬ 
cant or a portion thereof. 

Approved, January 8, 1913. 

(The new provisions are in italics.) 

3. It is unlawful to use the red 
cross for purposes of trade or adver¬ 
tisement unless the use began prior 
to January 5, 1905. (Penalty, fine and 
imprisonment.) 

REGISTERING UNDER THE TEN- 
YEAR CLAUSE 

There is a provision in the registra¬ 
tion act of 1905, to the effect that if 
a person can show that he has been 
the sole and exclusive user of a word 
as a trade-mark from February 20, 
1895, to February 20, 1905, he can reg¬ 
ister it, even if it is a geographical 
name, a descriptive name, or the name 
of a person. 



HOW TO SELECT TRADE-MARKS 19 


A number of decisions have been 
handed down on this provision and 
the last one by the U. S. Circuit Court 
of Appeals practically nullifies any 
advantage intended to be given a mark 
of this kind. Such registration, how¬ 
ever, serves as a basis for foreign reg¬ 
istrations. 

INFRINGEMENTS AND SIMILAR- 

ITY 

Is the word or trade-mark you are 
about to adopt like or similar to one 
that is in use by any other person or 
concern manufacturing similar goods? 
Whether one trade-mark is similar to 
another, is a question of opinion based 
on observation and sometimes on evi¬ 
dence showing that purchasers have 
mistaken one for the other. The Fed¬ 
eral Courts have, in a number of de¬ 
cisions, in important cases, established 
certain rules by which one may be 
guided to a certain extent, in determin¬ 
ing whether one trade-mark is similar 
to another. 



20 HOW TO SELECT TRADE-MARKS 


After you have established a large 
business, expended thousands of dollars 
for labels, advertised your trade-mark 
in magazines, on sign-boards, and in 
various other ways, it would be a great 
calamity to your business if some rival 
concern would file a suit in the United 
States Court and enjoin you from 
using your trade-mark in the sale of 
your goods, or putting the name on 
your goods, or from putting the name 
on advertising matter, or publishing it 
in newspapers and magazines. In re¬ 
cent years numerous suits of this char¬ 
acter have been successfully prosecuted 
in Federal and State Courts, and the 
number of cases litigated are rapidly 
increasing. 

To avoid trespassing on the rights 
of others in adopting a new trade¬ 
mark is one of the most difficult prob¬ 
lems to solve. There is no place where 
all trade-marks are recorded and con¬ 
sequently no way of being certain that 
you are not adopting one already in 
use. You should learn from a trade¬ 
mark attorney what is on file in the 



HOW TO SELECT TRADE-MARKS 21 


patent office. There are a very few 
lawyers giving special attention to this 
subject, but those who are, have sources 
of information as to unregistered trade¬ 
marks and it is therefore important to 
consult some one who has an extensive 
practice in this line. The following 
trade-marks have been held to be sim¬ 
ilar : 

Autogirdle and Auto-Garter; Auto¬ 
piano and Piano-Auto; Autola and Au¬ 
to-do; Akroma and Armona; Benedic¬ 
tine and St. Benedict; Colonial and 
Colonial Dame; Celluloid and Cellonite; 
Cottoleo and Cottolene; Cascarets and 
Castorets; Comfort and Home Comfort; 
Ceresota and Cressota; Croupine, Krou- 
pol and Crouplene, Carbolineum and 
Creo-Carbolin; Diamond Dust, Diamond 
and Diamond Mills; Edelweiss-Maltine 
and Maltine; Eagle and Gold Eagle; 
French and French Opera; Hoff’s and 
Leopold Hoff’s; Keepclean and Sta- 
kleen; Knoxall and Beats-All; La Vona 
and Larona; Mayfield and Mayfair; 
Maploma and Mapleine; National and 
New National; Nitro Hunter and Nitro; 



22 HOW TO SELECT TRADE-MARKS 


Optine and Optal Optimates and Op¬ 
timo ; Pepko and Pep-Kola; Remington 
and Remington Shoals; Soda Foam 
and Sea Foam; Satin and Satin Skin; 
Sapolio and Sapho; Vital Ore and Vital¬ 
izing Ore; Yusea and U-C-A; American 
Lady and American Girl; Auburn Lynn 
and Auburn Lynn Shoe Co.; Crystal 
Lake, Crystal Glen and Crystal Run; 
Charter Oak, Old Charter and Royal 
Charter; Chancellor Club and Club 
Cocktails; Don Carlos and Don Caesar; 
Diamond Jo, Diamond Mills and Big 
Diamond; Gold Dust and Cold Drop; 
Georgia Coon and New Coon; Ladylike 
and Lady Lee Shoe; Old Dutch Blend 
and Royal Dutch; Walnut Hill and 
Walnut Creek. 

YOUR OWN NAME AS A TRADE¬ 
MARK 

Ordinarily any person has a right to 
use his own name on his goods and very 
often the builders of business desire 
to make themselves famous in the bus¬ 
iness world by using their names as 
trade-marks on everything they sell. 
They never think that there are other 



HOW TO SEl^ECT TRADE-MARKS 23 


people of the same name who may 
make or sell the same kind of goods 
and may take advantage of the ex¬ 
tensive advertising of his name to make 
large profits for himself with compar¬ 
atively little expense for advertising. 
It is true that the law of unfair com¬ 
petition may to some extent protect 
the one first in the field, but such pro¬ 
tection is not always satisfactory and it 
is not good business policy to use the 
name of a person for a trade-mark. 
You can not register it in the United 
States Patent Office unless it comes 
within the ten-year proviso of the 
trade-mark act, or is written in a dis¬ 
tinctive form, or is associated with the 
portrait of such person. 

In export trade it is highly important 
to register all trade-marks in the coun¬ 
tries where trade is carried on. In 
many foreign countries the first to 
register a trade-mark is the owner. 
Some of them will permit registration 
by a citizen of a foreign country only 
in cases where he has first registered 
his trade-mark in his own country, 
and if you are barred from the United 





24 HOW TO SELECT TRADE-MARKS 


States Patent Office, you are likewise 
barred from such other countries. 

A personal name is usually product¬ 
ive of expensive litigation. Let us 
remember a few of them. L. E. Water¬ 
man Co. vs. Modern Pen Co., 183 Fed 
pp. 118. The court after long litiga¬ 
tion decided the defendant should place 
near the name ‘‘Waterman,’^ the 
phrase, “Not connected with the orig¬ 
inal Waterman Pens.” 

In Walter Baker & Co., Ltd., vs. 
Grey et al., 192 Fed. pp. 921, it was 
held that all equity requires is that a 
person shall make an honest use of his 
name and when that is done, a dealer 
in two articles need not affirmatively 
warn a customer ordering goods by 
means of a surname, that there are 
two makers of that name, and inquire 
whose product is desired. The suit was 
dismissed. 

In McLean vs. Fleming, 96 U. S. pp. 
245, the controversy was over Dr. Mc¬ 
Lean ^s Liver Pills and Dr. McLean ^s 
Universal Pills. 

In Singer Mfg. Co. Vs. June Mfg. Co., 




HOW TO SELECT TRADE-MARKS 25 


163 U. S. 169, the controversy was over 
the right to use the name ‘‘Singer” in 
the sale of sewing machines. An in¬ 
junction was granted not so much be¬ 
cause of the manner of using the name, 
as for various other acts in making the 
machines look the same. No injunction 
was granted against use of the name 
“Singer” if accompanied with explan¬ 
ation that it is not the original Singer 
Co. 

In the decisions will be found hun¬ 
dreds of cases concerning the right to 
personal names. 

Names distinctively written are 
proper trade-marks, such as a signa¬ 
ture, but purchasers do not ask for 
William’s Soap with the name written 
in the handwriting of “John Wil¬ 
liams,” but simply ask for William’s 
Soap. The exclusive right to use a 
name written in a distinctive manner 
is not worth much in practice, for the 
reason that it is the manner of writing 
it that constitutes the trade-mark and 
not the name. 

Names of ex-presidents. The Commis- 



26 HOW TO SELECT TRADE-MARKS 


sioner of Patents refuses to register as 
trade-marks the names of ex-presidents 
of United States. The refusal is on the 
ground that it is against public policy 
to permit the use of such trade-marks. 

LABELS 

Are your labels designed by a label 
or printing house who sells the same 
design to your competitors? If such is 
the case, you can have no exclusive 
right to that label even if it contains 
what would have been a technical trade¬ 
mark if you had originated it and first 
applied it to the goods. If your label 
is so similar to the label of your com¬ 
petitor who adopted and used his label 
earlier than you did yours, as would 
likely confuse purchasers, your com¬ 
petitor can prevent your use of the 
same in a manner calculated to deceive 
purchasers. Stock labels are those de¬ 
signed by a label house and sold to 
various parties for use in the same bus¬ 
iness and one user has no more right 
to it than another. Every merchant 
should be original or hire some one to 



HOW TO SELECT TRADE-MARKS 27 


be original for him in designing matter 
to put on his package. A label makes 
up the “dress” of the package and may 
be protected against infringement, if a 
competitor simulates it in a way which 
would likely deceive purchasers. 

FALSE STATEMENTS ON LABELS 

A court of equity will not protect 
a trade-mark or package of one who 
puts false statements of material facts 
on his labels, and a party who desires 
to appeal to a court for protection must 
see that his good will is not constructed 
on false and misleading statements to 
induce people to buy his goods. No 
statement should be put on a label 
which can not be proven to be true. 
I quote from a decision in the 152 Fed. 
498, the following: 

“There is no hardship in requiring a 
complainant who has stated certain 
things to the public as truths in order 
to promote the sale of his goods, to 
state the same things as truths to the 
court and prove them as truths in or¬ 
der to secure equitable relief.” 



28 HOW TO SELECT TRADE-MARKS 


PACKAGES 

Are the packages in which you sell 
your goods of your own design and 
different from the packages of your 
competitors? Purchasers often learn to 
know the goods of a manufacturer by 
the peculiar or attractive package in 
which they are sold. Our courts have 
frequently sustained suits to prevent 
persons from dressing up their pack¬ 
ages to look like the package of a suc¬ 
cessful rival concern who originated the 
package. There is a strong inclination 
of new concerns to imitate the style 
of packages of old successful concerns. 
Be careful to put no materially false 
or misleading statements on your pack¬ 
age, for such statements are often used 
to bar an action against an infringer. 

ACQUIRING A SECONDARY 
MEANING 

A geographical name or descriptive 
name or other imperfect trade-mark 
may be so well known to purchasers 
that when they see the name in con- 



HOW TO SELECT TRADE-MARKS 29 


nection with the goods, think only of 
the maker of the goods. To illustrate, 
if a customer enters a jewelry store 
and asks for an Elgin watch, the jew¬ 
eler understands that his customer de¬ 
sires a watch made by the original 
makers of the Elgin watch, and not 
just any watch made at Elgin, Illinois. 
If a purchaser asks a dealer for a 
Gillett razor, the dealer does not under¬ 
stand that his customer will be satisfied 
with any razor made by a man whose 
name is Gillett, but that he wants the 
particular razor made by the company 
who has so extensively advertised that 
name. When the name is so well 
known that both purchaser and dealer 
understand whose goods are wanted 
when the goods are called for by the 
name, then it has acquired a secondary 
meaning. 


FORM OF THE ARTICLE 

Courts have even sustained the right 
of a manufacturer to a particular form 
of an article where such form is a 



30 HOW TO SELECT TRADE-MARKS 


matter of beauty and ornamentation 
and not essential to the usefulness and 
operation of the thing made. Little 
can be said as to general rules on this 
subject, for each case rests on its own 
foundation, and a careful investigation 
of the particular case would be neces¬ 
sary to determine whether this branch 
of the law would be helpful to one 
whose goods are being copied. 

DESIGNS 

The beauty of the design of an 
article may be the most important item 
in recommending it to public favor, 
and, though the article could not be 
patented as a new mechanical device, 
still the design might be patented. In 
some cases, courts have sustained the 
right of a manufacturer to a design 
even where it has not been patented. 
A great many manufacturers, not 
knowing that they have any right to a 
design, have permitted rivals to copy 
their most attractive designs and put 
them on the market. 



HOW TO SELECT TRADE-MARKS 31 


MISTAKES TOO OLD TO MEND 

The manufacturer knows what to do 
in the future in adopting new trade¬ 
marks, packages, labels and designs, 
but what is he to do about the de¬ 
scriptive trade-mark which has been 
advertised all over the country and on 
which his business is constructed. 
What is he to do if he has constructed 
his business and good will on a geo¬ 
graphical mark? What is he to do if 
he has used his own name as a trade¬ 
mark or trade name and some other 
person of the same name begins a sim¬ 
ilar business and uses the same name 
as a trade-mark or trade name? The 
answer to each of the above questions 
depends upon the circumstances in each 
case, but wherever there is a wrong 
there is usually a remedy. Submit the 
facts to an attorney who has had a 
large experience in trade-mark and un¬ 
fair competition cases. It will not cost 
any great sum to get expert advice and 
after your attorney furnishes you an 
opinion, you can form your own opin¬ 
ion as to taking any action against the 
infringer. 



32 HOW TO SELECT TRADE-MARKS 


FOREIGN COMMERCE 

Those who are doing an export bus 
iness may find that some unscrupulous 
agent has taken advantage of the fact 
that in certain countries the first to 
register a trade-mark is the owner of 
it, and that he has registered the trade¬ 
mark of his principal and the real 
owner is prevented from using the 
trade-mark. Many foreign countries re¬ 
quire citizens of the United States to 
first register their trade-marks in the 
United States before they will be reg¬ 
istered in such other countries. 

HOW TO OBTAIN INFORMATION 

After a manufacturer or merchant 
has selected a trade-mark which he 
thinks he will adopt, before entering 
upon an expensive campaign of ad¬ 
vertising, or procuring a large quantity 
of expensive labels, he should consult 
an attorney who has made a specialty 
of trade-marks and unfair competition. 
He will investigate all registered trade¬ 
marks and other sources of information 
which he has gathered along this line. 



HOW TO SELECT TRADE-MARKS 33 


and while his opinion will not be in¬ 
fallible as to whether the trade-mark 
is being used by others, still the 
chances of making a mistake will be 
greatly lessened. The cost of making 
such investigation is a very small mat¬ 
ter compared to the money that will 
be expended in advertising the name. 

RECORD OF TITLE 

The owner of real estate never neg¬ 
lects to put on record his deed for 
real estate, but very often, even if the 
trade-mark is registered, and a sale of 
the business takes place, the trade¬ 
marks are not mentioned, and, even if 
mentioned in the sale, no attention is 
given to making a formal assignment 
and recording it in the Patent Office. 
This is an important part of every 
transfer of a business and should not 
be neglected. 

BUYING TRADE-MARKS 

Keep in mind that a trade-mark 
represents the good will of a business 
and if there is no business, there is 




34 HOW TO SELECT TRADE-MARKS 


no trade-mark. However, it may be 
necessary sometimes to go through the 
formality of buying a trade-mark like . 
or similar to your own, where you find 
another was the first to use it. While 
it may not give you an earlier date of 
first use, still it would at least be an 
abandonment by the person whose 
trade-mark you purchase, and worth 
the price to get a competitor out of 
the way. Before deciding to purchase 
a trade-mark get advice on the partic¬ 
ular case. So much depends on the 
circumstances in each case that it would 
not be safe to rely on general rules. 

GIVING OTHERS THE RIGHT TO 
USE A TRADE-MARK 

A trade-mark is not capable of own¬ 
ership except in connection with a 
business and can not be given away or 
sold without a business to go with it. 

If it represents your business it can not 
at the same time represent the busi¬ 
ness of one or half dozen others. The 
reason is obvious. The purchasers, see- 



HOW TO SELECT TRADE-MARKS 35 


ing the same trade-mark on similar 
goods made by different concerns, could 
not know whose goods it represents. 
One may make a good article, another 
an inferior one, and the way would be 
open to deception of purchasers. The 
purchasers must always be kept in 
mind, for the law is for their protection 
as well as the owner of the trade-mark. 
If you deceive or assist in deceiving 
purchasers, you lose your exclusive 
right to your trade-mark. Do not at¬ 
tempt to give others a right to use 
your trade-mark. 

SLEEPING ON YOUR RIGHTS 

Do not allow known infringers to go 
on, year after year, infringing your 
trade-mark, for after a time you lose 
your right to object. Many users of 
the same trade-mark may make it pub¬ 
lic property, then any one can use it. 
The star has been used so long, and 
for so many articles, and used by so 
many oil dealers, that it is public prop¬ 
erty for oil. 



36 HOW TO SELECT TRADE-MARKS 


USING MANY TRADE-MARKS ON 
THE SAME ARTICLE 

In certain lines of business many 
trade-marks are used for the- same 
goods. A manufacturer of rolled oats 
may have a Blue Ribbon, Snow Flake, 
Sensation, Morning Glory and several 
other brands, but the oats are all alike, 
taken from the same bin. These brands 
may all be valid so long as he con¬ 
tinues to so use them, but he can not 
sell them to others to be used by other 
persons on other kinds of oats. 

STATE REGISTRATION 

Nearly all of the states of the United 
States have trade-mark laws, and some 
of them afford very excellent protection, 
and in some respects, a state registra¬ 
tion, so far as the business in that 
state is concerned, affords better pro¬ 
tection than a federal registration. The 
state laws usually have criminal pro¬ 
visions against the imitafion or copy¬ 
ing of trade-marks registered in the 
state, and many of them provide that 



HOW TO SELECT TRADE-MARKS 37 


the successful party may recover his 
attorney fees from the defendant, in 
addition to all damages which he has 
suffered, etc. This subject is worthy 
of investigation by a person who has 
a valuable trade-mark and is using it 
extensively. No attempf is here made 
to explain the effect of the laws of the 
several states, because each state has 
a different law. Be (*areful to not 
allow some one ignorant of the subject 
to file application for you, for an im¬ 
proper registration may destroy your 
trade-mark. 

Contrary to what many believe, a 
registration in the U. S. Patent Office 
is only where the trade-mark is used 
in interstate commerce, or commerce 
with the Indian tribes or in foreign 
commerce, and a federal registration 
cannot be used as the basis of a suit 
when the infringer does business within 
a single state only. (See Warner vs. 
Serai, 191 U. S. 195). Under cer¬ 
tain circumstances a state registration 
is highly desirable and to give some 
idea of the provisions of the state laws 



38 HOW TO SELECT TRADE-MARKS 


a statement of some of the provisions of 
the acts of several of the states are here 
given. To register a trade-mark under 
a state law requires more experience 
and skill on the part of the attorney 
than a federal registration. 

This is because the secretaries of 
states where the applications are filed, 
are usually not men skilled in this 
branch of the law, and they will ac¬ 
cept an application in many instances 
even though grossly defective. One 
who is not familiar with the subject 
of trade-marks will not make a distinc¬ 
tion between a trade-mark and label, 
or a form of advertising, and if a reg¬ 
istration is trusted to unskilled persons, 
it is often a great detriment to the 
trade-mark owner rather than being of 
advantage to him. Below is a brief 
synopsis of the criminal and penal 
provisions of some of the state statutes: 

ARKANSAS 

The Arkansas Trade-Mark Law is 
substantially the same as the federal 
law, and requires a statement and 



HOW TO SELECT TRADE-MARKS 39 


verified declaration for registration. A 
copy of the registration is prima facie 
evidence of ownership, and the right 
to exclusive use. 

CRIMINAL LAW 

The statute provides for a fine of not 
more than $1,000, and imprisonment of 
not more than one year for infringe¬ 
ment. 


DAMAGES 

The owner of a registered mark may 
collect damages under the common law, 
and any additional attorney’s fees from 
the infringer. 

CALIFORNIA 

Any person who reproduces, copies 
or imitates, or counterfeits a trade¬ 
mark registered under the laws of this 
state, shall be guilty of a misdemeanor. 

Every person who sells goods bearing 
a trade-mark, warrants the trade-mark 
to be genuine and lawfully used. 



40 HOW TO SELECT TRADE-MARKS 


COLORADO 

In case the plaintiff is successful in ’ 
maintaining his action for damages or 
for permanent relief by injunction, or 
for nominal damages only, he shall be en¬ 
titled to recover attorneys fees as a 
part of the cost. 

CONNECTICUT 

After registration, a trade-mark is 
in force as long as it is used. It may 
be assigned, and the assignment re¬ 
corded. Registration is prima facie 
evidence of ownership. Infringers are 
liable for double damages, and for a 
sum of not more than $500 in addition 
to such damages. 

CRIMINAL LAW 

A small fine may be imposed for in¬ 
fringing a registered trade-mark. 

DELAWARE 

Every person who shall use a count¬ 
erfeit or imitation of any trade-mark, 
shall be guilty of a misdemeanor and 



HOW TO SELECT TRADE-MARKS 41 


punished by imprisonment in the coun¬ 
ty jail for not less than three months 
or more than one year, or by a fine of 
not less than $50 or more than $100, or 
both. 

A court may grant injunctions to 
enjoin the manufacture, use or display 
or sale of goods containing any count¬ 
erfeit or imitation of another’s trade¬ 
mark, and may award damages for 
such wrongful manufacture, such as 
the court may deem reasonable, and 
shall require the defendant to pay the 
complainant all profits derived from ‘the 
wrongful manufacture or sale, and 
shall have all the counterfeits or imita¬ 
tions destroyed. 

FLORIDA 

Florida has a provision in its trade¬ 
mark law providing a fine of not 
more than $500, and imprisonment of 
not more than three months for in¬ 
fringement. A certificate of registra¬ 
tion is sufficient proof of adoption and 


use. 



42 HOW TO SELECT TRADE-MARKS 


IDAHO 

A certificate of registration is suffi 
cient evidence of ownership of a trade¬ 
mark. A registrant may enjoin the 
use, or display for sale of goods bear¬ 
ing an infringing trade-mark. An in¬ 
fringer is liable for a fine of not more 
than $100, and imprisonment of not 
more than three months. 

ILLINOIS 

The statute of Illinois provides that 
whoever counterfeits or imitates any 
trade-mark, etc., shall be fined not less 
than $100 or more than $200, or im¬ 
prisoned not less than three months 
nor more than one year, or punished by 
])oth fine and imprisonment. 

IOWA 

Anyone who registers a trade-mark 
in Iowa can recover damages, attorney 
fees and profits, and is entitled to 
injunction against use of it by an in¬ 
fringer. The criminal law provides 
imprisonment of not more than thirty 



HOW TO SELECT TRADE-MARKS 43 


days, and a fine of not less than $25.00 
or more than $100.00 for imitating the 
trade-mark. 


KANSAS 

Provides that an infringer may be 
fined not more than $100 or imprisoned 
not more than three months. Courts 
have jurisdiction to grant injunctions, 
to award damages for infringement, 
and give the plaintiff judgment for all 
profits made on sales bearing infring¬ 
ing marks. 


LOUISIANA 

An infringer of a trade-mark regis¬ 
tered in Louisiana is liable for all 
profits made from the wrongful man¬ 
ufacture or sale of goods bearing an 
infringing trade-mark, and the court 
may order all counterfeit labels de¬ 
stroyed. The criminal law provides for 
a fine of not more than $100, and im¬ 
prisonment of not more than three 
months, for counterfeiting or imitating 
a trade-mark. 



44 HOW TO SELECT TRADE-MARKS 


MAINE 

Certificate of registration is prima 
facie evidence of the right of the own¬ 
er thereof to the exclusive use of the 
trade-mark therein described. One who 
copies or imitates a recorded trade¬ 
mark is liable to the owner for double 
damages and in addition a sum not ex¬ 
ceeding $500. 

One who fraudulently affixes any 
similar trade-mark to goods may be 
fined not more than $500 or imprisoned 
not more than thirty days. 

MARYLAND 

A certificate of registration is suffi¬ 
cient evidence of the recording of the 
trade-mark, and of the existence of the 
person named in the certificate. The 
Supreme Court and Superior Court 
have jurisdiction to restrain the man¬ 
ufacture or sale of counterfeits or 
imitations. The criminal law provides 
a fine of not more than $200, and im¬ 
prisonment of not more than a year, 
or both. The law applies to everyone 
who sells or exposes for sale the goods 
bearing an infringing trade-mark. 



HOW TO SELECT TRADE-MARKS 45 


MASSACHUSETTS 

Registration in Massachusetts is suffi¬ 
cient proof of adoption and use. The 
owner of a registered trade-mark may 
enjoin the manufacture, use or display 
for sale of goods hearing a counterfeit 
or imitation of his trade-mark. The 
court shall grant an injunction re¬ 
straining the manufacture, use or dis¬ 
play for sale of goods bearing counter¬ 
feit of a registered trade-mark. The 
registrant may recover damages to any 
amount the court may deem reasonable, 
and profits from the wrongful manu¬ 
facture and compel the infringer to 
surrender all imitations or counterfeits. 
The criminal law provides a fine of not 
more than $200, and imprisonment of 
not more than one year for infringment. 

MICHIGAN 

Any person who sells or keeps in 
his possession for sale any goods bear¬ 
ing a counterfeit or imitation of an¬ 
other’s trade-mark shall be guilty of a 
misdemeanor, punished by a fine of not 



46 HOW TO SELECT TRADE-MARKS 


less than $10 or more than $100 or by 
imprisonment in the county jail not 
more than 90 days, or both fine and 
imprisonment. 

MINNESOTA 

The Minnesota law provides a pen¬ 
alty of a fine of not more than 
$100 or imprisonment of not more 
than three months, for the imi¬ 
tating or counterfeiting of another’s 
trade-mark; and for fraudulent imita¬ 
tion, it provides for imprisonment in 
the county jail of not less than six 
months and not more than twelve 
months, and a fine of not more than 
$5,000. The owner of a registered 
trade-mark may sue to enjoin the 
manufacture, use or sale of coun¬ 
terfeits or imitations, and the court 
may grant injunctions restraining the 
manufacture, use, sale or display for 
sale, on such terms as the court may 
deem reasonable. The owner of a reg¬ 
istered trade-mark may recover all 
profits made from the wrongful manu¬ 
facture, use or sale of goods bearing 



HOW TO SELECT TRADE-MARKS 47 


an imitation trade-mark, and the court 
may order all counterfeits or imitations 
destroyed. 


MISSOURI 

For counterfeiting trade-marks a 
penalty is provided of imprisonment 
in county jail not less than three 
months nor more than twelve months, 
and a fine of not less than $100, nor 
more than $500, or both fine and im¬ 
prisonment, and where an intent to de¬ 
fraud is shown imprisonment for not 
less than one month nor more than 
twelve months, and a fine of not less 
than $100 nor more than $5,000; or 
both fine and imprisonment. In a civil 
suit, the court has power to enjoin the 
further use of the labels or trade-marks, 
and order the destruction of all on 
hand, etc. 


MONTANA 

Any person who imitates any label 
or trade-mark or form of adventise- 
ment, shall be guilty of a misde¬ 
meanor. 



48 HOW TO SELECT TRADE-MARKS 


NEBRASKA 

Any person who falsely makes or 
counterfeits any trade-mark with an 
intent to damage or defraud any per¬ 
son, shall be liable to imprisonment in 
the penitentiary for not exceeding 
twenty years, nor less than one year, 
and pay a fine not exceeding $500. 

NEVADA 

Any person who imitates or copies 
a registered trade-mark may be fined 
not less than $25 nor more than $500, 
or imprisoned not less than five days 
or more than thirty days, or both fine 
and imprisonment and shall be liable 
to any person injured for all damages 
incurred. A trade-mark is entitled to 
the same protection in the courts of 
this state as any other personal prop¬ 
erty, and the court may issue injunc¬ 
tion to prevent infringements. 

NEW HAMPSHIRE 

The New Hampshire trade-mark law 
applies to manufacturers, provides for 



HOW TO SELECT TRADE-MARKS 49 


issuing injunctions to enjoin the man¬ 
ufacture or sale of articles bearing a 
counterfeit or imitation trade-mark, or¬ 
dering the destruction of all imitation 
labels, etc. Violations of the act may 
be punished by imprisonment in the 
county jail not less than three months 
or more than one year, or by fine of 
not less than $100 or more than $200 
or both. 


NEW JERSEY 

Injunction may be granted enjoining 
the use of any copy or imitation or 
counterfeit trade-mark, and the court 
may render judgment for all damages 
arising from its unlawful use, together 
with all costs and expenses in pros¬ 
ecuting the action, order the offending 
labels destroyed and in addition to 
this, the owner of a trade-mark may 
recover from $200 to $500 as a penalty 
for the wrongful use. 

NEW YORK 

Any person who affixes to any article 
of merchandise any imitation of the 



50 HOW TO SELECT TRADE-MARKS 


trade-mark of another, is guilty of a mis¬ 
demeanor. 

NORTH CAROLINA 

A trade-mark registered under the 
laws of this state is declared to be 
entitled to be fully protected as the 
property of the registrant. A certi- 
cate of registration is sufficient proof 
of adoption. The certificate cannot be 
assigned and when the trade-mark is 
sold, it must be registered by the 
purchaser. A court is empowered to 
enjoin manufacturers from using 
counterfeit trade-marks or using 
imitation labels as trade-marks. It 
shall enjoin the manufacture or sale 
of such goods bearing such trade¬ 
marks or offering the same for sale, 
and may make such, other orders as to 
the court may seem necessary. It 
may require the defendant to pay 
all damages incurred, with all costs, 
pay all profits obtained which are de¬ 
rived from the wrongful use, or both 
profits and damages, and to surrender 
all counterfeits or imitation labels. 



HOW TO SELECT TRADE-MARKS 51 


Any person who violates the provisions 
of the act are subject to a penalty of 
$200 to be recovered by the one who 
registered the trade-mark, etc. 

NORTH DAKOTA 

One who sells an article bearing a 
trade-mark warrants it to be lawfully 
used. Anyone who uses a trade-mark 
that he was not the first to employ or 
use is guilty of a misdemeanor and in 
addition liable to the injured party for 
damages to the sum of $100 for each 
offense. 


OHIO 

The Ohio trade-mark law is so de¬ 
fective as not to be of any substan¬ 
tial use, but it is probable that it will 
be amended at the present session of 
the legislature. 

OKLAHOMA 

The laws of Oklahoma provide for a 
fine of not more than $100, or im¬ 
prisonment of not more than three 



52 HOW TO SELECT TRADE-MARKS 


months, for infringement of a trade¬ 
mark. Courts may grant injunctions 
to prevent the manufacture or sale of 
goods bearing the trade-mark, award 
complainant damages for wrongful use, 
together with all profits from sales, and 
order the destruction of all labels or 
counterfeits. 

OREGON 

Anyone who infringes a recorded 
trade-mark forfeits to the owner of the 
trade-mark one-half of the goods on 
which the infringing mark is placed 
or the value thereof, to be recovered 
in an action in any court having juris¬ 
diction. For a second infringement, 
he forfeits the whole value of the goods 
on which it is used. 

Goods imported into this state which 
shall bear for the purpose of deception 
any trade-mark similar to registered 
trade-mark used on the same goods, 
shall forfeit the goods imported to any 
party injured thereby. 



HOW TO SELECT TRADE-MARKS 53 


PENNSYLVANIA 

Pennsylvania has a general trade- 
mark law providing for registration, 
but the remedies provided for infringe¬ 
ment are those of the common law in 
force generally. 

RHODE ISLAND 

One who infringes a trade-mark reg¬ 
istered under the state law of Rhode 
Island is liable to a fine of not more 
than $100 or imprisonment for not 
more than three months. An in¬ 
junction against all infringing marks 
may be granted, reasonable damages 
be awarded, together with all profits 
derived from the sale of goods 
containing infringing labels, and the 
labels ordered destroyed. 

SOUTH CAROLINA 

One who uses an unrecorded trade¬ 
mark which infringes one recorded in 
this state, is liable to a fine of not more 
than $100 or imprisonment for not 
more than three months. The court 



54 HOW TO SELECT TRADE-MARKS 


may grant injunction to restrain 
the manufacture or sale of goods 
bearing the infringing mark, may 
award reasonable damages, together 
with all profits derived from such sales 
and order the destruction of all in¬ 
fringing labels. 

SOUTH DAKOTA 

Anyone who sells an article bearing 
a trade-mark, thereby warrants the 
trade-mark to be lawfully used. Any¬ 
one who keeps for sale an article bear¬ 
ing a counterfeit trade-mark knowing 
the same to be a counterfeit, is guilty 
of a misdemeanor. 

TENNESSEE 

Counterfeiting a trade-mark or sell¬ 
ing goods bearing an imitation of an¬ 
other's trade-mark registered in this 
state, is punishable by a fine of not 
more than $100 or imprisonment not 
more than three months. Courts may 
grant injunctions against infringe¬ 
ments, award damages for wrongful 



HOW TO SELECT TRADE-MARKS 55 


use, give the plaintiff all profits 
made under wrongful sale, and 
order the destruction of all counterfeit 
or imitation labels. One who uses an¬ 
other’s trade-mark for the purpose of 
defrauding him, may be punished by 
imprisonment or by a fine of not more 
than $100. 

TEXAS 

Infringement may be punished by a 
fine of not less than $25, or more than 
$100. Each day’s violation is a sepa¬ 
rate offense. The courts may enjoin 
the wrongful manufacture or sale of 
goods bearing another’s trade-mark 
and grant reasonable damages for 
wrongful use. 

Note.—There is serious danger of 
losing your trade-mark rights in Texas 
if you do not register there, especially 
if some other person registers your 
trade-mark. 

UTAH 

The courts may grant injunctions 
against the use of infringing trade¬ 
marks and award damages for wrong- 



56 HOW TO SELECT TRADE-MARKS 


ful use of the same. Forging or 
counterfeiting trade-marks is made a 
misdemeanor and is punished as other 
misdemeanors. 

VERMONT 

One who knowingly infringes a trade¬ 
mark registered in this state may be 
fined not exceeding $1,000, or im¬ 
prisoned not exceeding one year. 
All courts having jurisdiction may 
enjoin the manufacture or sale of 
goods bearing an infringing mark, 
award reasonable damages for wrong¬ 
ful use, may order the defendant to 
pay the plaintiff a sum equal to the 
amount which he would have received 
for the same quality of genuine goods, 
and may order any similar labels de¬ 
stroyed. 


VIRGINIA 

One who uses an infringing trade¬ 
mark is guilty of misdemeanor and 
shall be punished by imprisonment of 
not more than three months, or fined 
not more than $100. 



HOW TO SELECT TRADE-MARKS 57 


WASHINGTON 

Provides a fine of not more than 
$100 and imprisonment not more than 
three months, for infringement. Courts 
may grant injunctions to prevent the 
sale of goods bearing an infringing 
trade-mark, award damages for the 
wrongful use, and all profits made from 
the sale of goods bearing such infring¬ 
ing mark, and order all such labels 
destroyed. 

WEST VIRGINIA 

Provides a fine of not more than 
$300 and imprisonment not more than 
three months, or both fine and im¬ 
prisonment of one guilty of infringing 
a registered trade-mark. It also pro¬ 
vides that all trade-marks shall be 
registered in that state. 

WISCONSIN 

Provides that an infringer may be 
fined not more than $200 or impris¬ 
oned not more than six months 
Courts may grant injunctions restrain- 



58 HOW TO SELECT TRADE-MARKS 


ing infringement of a trade-mark and 
award damages to the injured party 
which he may suffer from such in¬ 
fringement. 


WYOMING 

Provides that an infringer may be 
fined not more than $200 or imprisoned 
not more than one year. Courts may 
grant injunctions to prevent infringe¬ 
ments, award damages for the wrongful 
use of a trade-mark as well as render 
judgment for profits on wrongful sales, 
and it may order all infringing labels 
destroyed. 


PRIVATE REGISTRATION 
BUREAUS 

A private registration bureau con¬ 
fined to a single industry, if con¬ 
structed by a thoroughly capable per¬ 
son and includes all trade-marks in 
that industry, is of tremendous value 
as a source of information for those 
who are permitted to have access to it. 




Things W®rth Knowing 


What is an interference? 

Answer:—It is a term used by the 
Patent Office and means what the word 
implies, that something is in the way, 
an obstruction and the thing that is 
in the way is another trade-mark sim¬ 
ilar to your trade-mark. If your trade¬ 
mark is registered in the Patent Office 
and someone applies to register the 
same or similar trade-mark, the ex¬ 
aminer looks over the registered marks, 
finds your trade-mark was registered 
on a certain date, and if the applicant 
claims he used the trade-mark before 
you registered it, the examiner then 
declares an interference and notifies 
you; then testimony is taken by both 
parties to prove who first used it. If 
two parties apply at the same time to 
register the same trade-mark, the ex¬ 
aminer also declares an interference 
and then the one who can prove first 
use is allowed to register. 



60 HOW TO SELECT TRADE-MARKS 


What is an opposition? 

Answer:—If you discover that some¬ 
one is trying to register your trade¬ 
mark, or one similar to it, you are 
allowed to oppose it if you file your 
notice of opposition within thirty days 
after the trade-mark is published in 
the Official Gazette. This does not 
mean that you can write to the Com¬ 
missioner of Patents and tell him you 
object, but requires very carefully 
drawn pleadings by one skilled in this 
practice and is almost as difficult to 
properly prepare as a bill in equity 
to be filed in the United States District 
Court. An opposition may be because 
the opposer owns the trade-mark, or 
because some third party owns it, or 
because nobody owns it, or because it 
belongs to anyone who wishes to use 
it, or any reason which will show that 
the party who tries to register it does 
not own it. 

What is meant by cancellation? 

Answer:—If you find some one has 
registered your trade-mark you can file 



HOW TO SELECT TRADE-MARKS 61 


a petition to cancel the registration. 
This is also a technical pleading and 
requires skill and care in preparation 
of the petition and prosecution of the 
case. It is preferable to filing opposi¬ 
tion, because you can have more time 
to prepare for the attack. 

Does registration keep others from 
using the registered trade-mark? 

Answer:—No, but it furnishes you a 
basis for a suit against an infringer, 
gives you remedies for the infringe¬ 
ment you would not have if the trade¬ 
mark was not registered, and if copies 
are filed in the custom houses, prevents 
foreign goods from being shipped in 
with any similar trade-mark attached. 
It automatically prevents many in¬ 
fringements and law suits, because few 
will try to appropriate a registered 
trade-mark. It extends the territorial 
power of courts in enforcing injunc¬ 
tions and when properly used, affords, 
the registrant a liberal reward for his 
trouble or expense in registering. 



62 HOW TO SELECT TRADE-MARKS 


NOTICE OF REGISTRATION 

Every owner of a registered trade¬ 
mark should place on his package near 
his trade-mark this: “Reg. U. S. Pat. 
Off.” or “Registered in U. S. Patent 
Office.” This is required by Sec. 28, 
of the act of 1905. 

How do you adopt a trade-mark? 

Answer:—By selecting some mark 
not already in use for the same goods, 
by applying the mark to some article 
of commerce and by selling the ar¬ 
ticle with the mark upon it. Using 
the mark in advertisements only does 
not make it a trade-mark. 

Who may own a trade-mark? 

Answer:—One who manufactures or 
one who selects and sells the goods. 
The goods may contain the trade-mark 
of the manufacturer and also the one 
who selects the goods. 

What kind of a label can be copy¬ 
righted? 

Answer:—One which has such artis¬ 
tic merit that it is useful for other 




HOW TO SELECT TRADE-MARKS 63 


purposes than merely for the purpose 
of putting it on containers of goods to 
indicate the contents of the package; 
things are copyrighted with a view 
to giving the author exclusive right 
to make and sell the copies. Many 
labels are permitted to be copyrighted, 
which in my opinion are not proper 
subjects for copyright and are worth¬ 
less. 

A photograph of a building may be 
copyrighted, and then a dozen other 
persons may photograph the same 
building and each one can be copy¬ 
righted. It is easy to see that a copy¬ 
right of a thing of this nature would 
be of no particular value for use in 
attaching it to the goods. The theory 
of the copyright is that the owner 
of it will sell the copies; the theory 
of business is that the copyright is use¬ 
ful in ornamenting the package. It is 
often a difficult question to determine 
whether an article submitted for inspec¬ 
tion is a proper subject for a copy¬ 
right. Many label copyrights are ob¬ 
tained which are entirely worthless. 



64 HOW TO SELECT TRADE-MARKS 


Is it proper to speak of trade-mark¬ 
ing as label? 

Answer:—No. Some labels can be 
copyrighted, as is elsewhere explained 
There is a great difference between a 
copyright and a trade-mark. 

Is it proper to speak of getting a pat¬ 
ent on a trade-mark? 

Answer:—No. You register a trade¬ 
mark but there is no analogy between 
a natent and a registered trade-mark. 

What is the difference between a suit 
for unfair competition and a suit for 
infringement of a trade-mark? 

Answer:—A suit for unfair com¬ 
petition is one in which you set up 
facts showing that your competitor is 
trying to defraud you by various plans 
and schemes, for selling his goods and 
making the public believe that they are 
your goods, or the same as your goods. 
This plan may be by using a trade-mark 
exactly like your trade-mark, or similar 
to your trade-mark, or by dressing his 
goods in a package to look like your 



HOW TO SELECT TRADE-MARKS 65 


package, and by this means cause the 
public to buy his goods, believing they 
are buying your goods; or any other 
plan which he may adopt, that will ac¬ 
complish the same purpose. A suit for 
unfair competition is based on fraud 
and in a suit for infringement of trade¬ 
mark, the defendant may not be guilty 
of intentional fraud—he may not know 
that you own the trade-mark and may 
not have had any intention to sell his 
goods for your goods, but it matters 
not what his intention was, you have 
a right to enjoin his use of your trade¬ 
mark. In other words, unfair competi¬ 
tion is bad faith on the part of the de¬ 
fendant, and in a trade-mark case, even 
if he is acting in good faith, he will be 
prevented from infringing because he 
is trespassing on your property right. 

What is the difference between a 
state registration and a registration in 
the United States Patent Office? 

Answer:—If you have a trade-mark 
registered in the United States Patent 
Office, you can use the certificate of 



66 HOW TO SELECT TRADE-MARKS 


registration as evidence in a suit, pro¬ 
vided the party you are suing, uses 
the same or similar trade-mark in inter¬ 
state or foreign commerce, or commerce 
with the Indian tribes, but if the party 
you desire to sue, does not use the 
trade-mark, except in a single state, 
you could not use your patent office 
registration as a basis for the suit. In 
a case of this kind a registration under 
the state law, would be much more use¬ 
ful, than a registration in the patent 
office. 

What is the difference between a 
print and a label? 

Answer:—A label must be used on 
the goods, and a print is something 
which need not be used on the goods 
but is usually used in advertising the 
goods. 

A great many prints are filed in the 
patent office and copyrighted. 

What is the difference between a 
copyright and a trade-mark? 

Answer:—A copyright is the exclu¬ 
sive right to make copies. A trade¬ 
mark is the exclusive right to the use 



HOW TO SELECT TRADE-MARKS 67 


of something for the purpose of attach¬ 
ing it to the goods to indicate who 
made or selected the goods. There are 
many and various kinds of things that 
may be copyrighted if the original 
copies contain the proper notice of 
copyright which notice must be strictly 
as directed by the statutes; any other 
notice would be void. 

What is a proper notice of copy¬ 
right? 

Answer:—That depends on what is 
to be copyrighted. There are so many 
different kinds of notice that it is ad¬ 
visable to make inquiry of an attorney 
respecting the particular thing to be 
copyrighted and how the notice should 
be placed. 

What is the difference between a 
trade-mark and a label? 

Answer:—A label is something which 
is put on a container of goods to show 
what is in the container. The trade¬ 
mark is something put on the container 
or on the goods to show who made the 
goods or who selected and controlled 



68 HOW TO SELECT TRADE-MARKS 


the making of the goods. They are 
opposite, one to the other. A label is 
necessarily descriptive of the goods; a 
trade-mark is not necessarily descript¬ 
ive of the goods. 

In trade, by the term “Label” is 
usually meant a printed or litho¬ 
graphed paper prepared for pasting to 
cans and boxes, and usually contains 
a statement of the contents of the 
package, some times a trade-mark, and 
various other features of ornamenta¬ 
tion. It is incorrect to speak of trade 
marking a label. A label such as here 
mentioned, may contain a trade-mark, 
but it would not be a trade-mark. 
Protection for such labels is usually 
best secured through recourse to the 
law of unfair competition, but some 
of them may be copyrighted, although 
that does not afford very substantial 
benefits. 

You have stated what may not be 
proper trade-marks, now what are the 
things which may be properly used? 

AnswerExamine the donT column 
and then select from anything there is 



HOW TO SELECT TRADE-MARKS 69 


remaining. To know what is proper 
to use you must know what is not 
proper to use. Make your selection and 
then see whether it is any of the things 
which may not become a trade-mark 
for that kind of goods. If you find 
any of the objections to it under the 
different heads we have been discussing^ 
discard it and select another until you 
get one to which there is no legal ob¬ 
jection. Some business men think the 
field is very limited. That is a mistake. 
The field is as broad as imagination. 
Millions of symbols and names of 
things may be used. All the different 
kinds of birds, the fiowers, trees, rocks,, 
plants, animals, insects, geometrical fig¬ 
ures, landscape scenes, buildings, the 
names of the stars and planets, fanciful 
pictures of persons, cartoons; and the 
dictionaries and encyclopedms will be¬ 
wilder you with names which would 
be proper and technical trade-marks. 
It is a great deal of work to get one 
that is attractive, but it is mostly a 
question of industry and imagination, 
when you find one suitable, submit it 



70 HOW TO SELECT TRADE-MARKS 


to your attorney for such investiga¬ 
tion as he can make as I have else¬ 
where indicated. 

PRESERVING YOUR EVIDENCE 

A file of evidence applying to each 
trade-mark should be kept and as near 
as possible should contain a few 
of the original labels or pack¬ 
ages ; the name and address of the 

person who made the drawing for the 

trade-mark; the name and address of 
the person who made the cut from 
which the first labels were printed 

which contained the trade-mark, the 

date when it was made; a copy of 
the order for the printing of the labels 
or other means of producing the trade¬ 
mark; the invoice for the labels, the 
bill for printing, receipt for payment; 
the name and address of the first pur¬ 
chaser of the goods; the original order 
for the goods, with date of shipment 
and numerous orders from different 
purchasers, say eight or ten of the 
earliest, so that if one dies or goes 



HOW TO SELECT TRADE-MARKS 71 


out of business, others may be had as 
witnesses. The names and addresses of 
parties in your employ who had per¬ 
sonal knowledge of the first use of the 
trade-mark; a few original letters or¬ 
dering the goods; advertising cards or 
the date of publications of advertise¬ 
ments in one or more papers, if there 
were any; about one original order for 
each month of each year (if there were 
orders each month, if not then at 
longer intervals) a copy of the invoice, 
and the original shipping receipt. If 
the ownership of the business changes, 
then these records should be delivered 
to the successor in business who will 
continue to keep the record. 



72 


INDEX 


Reference is to Page. 


Page. 

Adoption of Trade-Mark—What is.... 62 

Assignment—Placing on Record. 33 

Buying Trade-Marks . 33-34 

Cancellation Proceedings—What is.... 60 
Colors as Trade-Marks . 15 

Copyrights Distinguished from Trade- 
Marks . 66 

Copyrights of Labels . 62-63 

Deceptive Trade-Marks cannot be used 14-15 

Descriptive Trade-Marks . 9-11 

Descriptive Words Misspelled. 11-12 

Descriptive Words in Foreign Lan¬ 
guage . 13-14 

Designs and Design Patents. 29 

Evidence of Adoption and Use—How 

Preserved . 70-71 

Foreign Commerce—Importance of 

Registration in U. S. Patent Office.. 32 
Form of an Article May Be Protected 29-30 

Geographical Names . 12-13 

Giving Others Right to Use. 34-35 

Information—How to Obtain. 32 

Infringements . 19-22' 

Interference—What Is . 59 

Labels Should Make Package Distinc¬ 
tive—False Statements . 26-27 

Mistakes Too Old to Mend . 31 

More Than One Trade-Mark on Same 

Article . 36 

Names of Ex-Presidents . 25 























INDEX 


73 


Page 

Names of Persons Distinctively Writ¬ 
ten . 25 

Names of Persons as Trade-Marks., 22-25 

Notice of Copyright . 67 

Notice of Registration—What Should 

Contain . 62 

Opposition—What Is . 60 

Ownership—Who May Own . 62* 

Packages—Style of . 28 

Patent Office Registration Compared 
With State Registration . 65 

Prints Distinguished from Labels. 66 

Private Registration Bureaus. 58 

Registrations Prohibited—What Are.. 15-18 

Registrations Under Ten-Year Clause 
—What Are . 18-19 

Registration in Patent Office—Pffect of 61 

Secondary Meaning—What Is . 28-29 

Similarity and Illustrations . 19-22 

Sleeping on Your Rights . 35 

State Laws for Registration . 36-38 

Arkansas Laws—Remedies . 38 

California—Remedies . 39 

Colorado . 40 

Connecticut . 40 

Delaware . 40 

Flororida . 41 

Idaho . 42 

Iowa . 42 

Illinois ... .•. 42 

Kansas . 43 

Louisiana .. 43 

Maine . 44 

Maryland . 44 

Massachusetts . 45 

Michigan . 45 
































74 


INDEX 


Page 

Minnesota . 46 

Missouri . 47 

Montana . 47 

Nebrasika .. 48 

Nevada . 48 

New Hampshire . 48 

New Jersey . 49 

New York . 49 

North Carolina . 50 

North Dakota . 51 

Ohio . 51 

Oklahoma . 51 

Oregon . 52 

Pennsylvania . 53 

Rhode Island . 53 

South Carolina . 54 

South Dakota . 54 

Tennessee . 54 

Texas . 55 

Utah .. 55 

Vermont . 56 

Virginia . 56 

Washington . 57 

West Virginia . 57 

Wisconsin . 57 

Wyoming . 58 

Title—Record of . 33 

Trade-Mark Distinguished from Label 67 

Trade-Mark—What May Properly Be 
Used as . 68-70 

Unfair Competition and Trade-Mark 
Suits . 64 


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